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T 1360/13 - Drawings much improved, but patent invalid

Drawing sheet 1 as replaced
Drawing sheet 1 as originally filed

The patent was granted with drawing sheets exchanged according to Rule 26 PCT during the international phase, the originally filed drawing sheets being of poor quality, essentially showing black or grey elements. The same exchanged drawing sheets which were part of the patent as granted are part of the main request documents.

The board concluded that many details present in the figures of the patent as granted are not disclosed directly and unambiguously by the application as originally filed.

To overcome this problem, the proprietor filed a series of requests 9-17 in which all drawing sheets have been deleted and all references to the figures in the description and claims have been deleted as well.  (Requests 1-8 were withdrawn.) For the BA this corresponded to an extension of protection, not allowable under Art 123(3) in view of Art 69. The board provided the following catchword. 


In view of Article 69(1) EPC which states that the description and the drawings shall be used to interpret the claims when determining the extent of the protection conferred by a European patent, after grant, any information in the description and/or drawings of a patent directly related to a feature of a claim and potentially restricting its interpretation cannot be removed from the patent without infringing Article 123(3) EPC.

T 1391/15 - Deviations and displacements

An interesting decision concerning what the skilled person would directly and unambiguously derive from the application as filed, when disputes concerning translations of terms from a non-official language arise.

In the present case, part of the objections raised by the opponent-appellant stem from an (alleged) error in the original Italian language application and a supposedly incorrect translation into English of another term in the original application.

More specifically, whereas the original application (concerning a system and apparatus for dehumidifying walls) mentioned “spostamenti” which was subsequently translated into English as "movements", the patentee later amended this term to “differences” based on the corresponding Italian term “scostamenti”, arguing that this amendment was an obvious correction within the meaning of Rule 139 EPC. The opposition division agreed.

While the Board considered it plausible, perhaps even probable, that the term "spostamenti" was erroneous, it found that within the context of the patent spostamenti/movements could in fact meaningfully refer to movements of the apparatus of the invention over the wall; accordingly, it found that the strict conditions for allowing the correction under Rule 139 EPC were not met. Regardless, the Board considered that the overriding issue was in fact whether or not this amendment complied with Article 123(2) EPC. In this regard, the Board argued that it would be clear to the person skilled in the art reading the application as filed that operation of the claimed apparatus would implicitly result in a “difference” or “differences” in certain observed values. Accordingly, in the Board’s view, the term "(in function of the) differences" in claim 1 would not present the skilled person with any new information not directly and unambiguously derivable from the application as filed, thus allowing (under Art. 123(2) EPC) the amendment of (spostamenti) ”movements” to (scostamenti) ”differences”.

The Board further considered the term “monitor” - rather than "control" - in claim 1 based on the original “controllo/controllare” not to contravene Article 123(2) EPC in view of the disclosure of the patent as a whole, which discloses both monitoring and controlling of the dehumidifying process.

T 473/15 - Closest prior art not directed to the same purpose or effect as the invention

In the present case, novelty and prior art were challenged in opposition appeal. The main request was considered novel, in view of it being considered a multiple selection from alternatives and parameter ranges disclosed in different parts of the description of a prior art document D5 and there being no pointer towards applying them in combination. The opponent considered the same document as the closest prior art, and the board saw no reason to depart from this choice. However, the claim aimed for an improved filtereing whereas D5 related to a different purpose or effect: chromatography. "In other words, D5 relates to a different technical field than that of the patent in suit. However, a closest prior art that is not directed to the same purpose or effect as the invention cannot, according to established case law, lead the skilled person in an obvious way to the claimed invention (see the introductory remarks to Case Law of the Boards of Appeal, 8th ed., I.D.3.2).  Applied to the present case, this means that the skilled person would not, without hindsight, try to improve the particulate capture efficiency of the medium of D5, which is meant for chromatographic separation. Hence, the skilled person would not, when starting from D5, apply D4's, D10's or any other document's teaching, since these documents do not deal with chromatographic separation."